Uniloc 2017 LLC

Patent Trials and Appeals Board

Jul 20, 2020

IPR2019-01530 (P.T.A.B. Jul. 20, 2020)

Trials@uspto.gov
571-272-7882
Paper 9
Date: July 20, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
APPLE, INC.
Petitioner,
v.
UNILOC 2017 LLC,
Patent Owner.
____________
IPR2019-002511
Patent 6,993,049 B2
____________
Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
Administrative Patent Judges.
BAER, Administrative Patent Judge.
JUDGEMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
DECISION
Petitioner’s Motion to Submit Supplemental Information
37 C.F.R. § 42.123(a)
1 LG Electronics, Inc., who filed a petition in IPR2019-01530, has been
joined as a petitioner in this proceeding.
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I. INTRODUCTION
Apple, Inc., (“Petitioner”) filed a Petition (Paper 2, “Pet.”), requesting
an inter partes review of claims 11 and 12 of U.S. Patent No. 6,993,049 B2
(Ex. 1001, “the ’049 patent”). Uniloc 2017 LLC (“Patent Owner”) filed a
Preliminary Response to the Petition (Paper 6, “Prelim. Resp.”). Upon
consideration of the Petition and Preliminary Response, we instituted inter
partes review of all challenged claims on all grounds raised. Paper 7 (“Dec.
Inst.”).
On September 3, 2019, Petitioner filed a Motion to Submit
Supplemental Information (Paper 9, “Mot.”), and Patent Owner filed an
Opposition to Petitioner’s Motion (Paper 10, “Opp.”). Patent Owner filed a
Response to the Petition (Paper 11, “PO Resp.”) and Petitioner filed a Reply
(Paper 12, “Pet. Reply”). Patent Owner filed a Sur-Reply (Paper 13, “PO
Sur-Reply”). An oral hearing was held on April 23, 2020, and the hearing
transcript is included in the record. See Paper 21 (“Tr.”).
In our Scheduling Order, we notified the parties that “any arguments
not raised in the [Patent Owner] response may be deemed waived.” See
Paper 8, 7; see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,766 (Aug. 14, 2012) (“The patent owner response . . . should identify all
the involved claims that are believed to be patentable and state the basis for
that belief.”). Patent Owner argues that it “does not concede, and
specifically denies, that there is any legitimacy to any arguments in the
instant Petition that are not specifically addressed” in its Patent Owner
Response. PO Resp. 28 n.3. We decline to speculate as to what Patent
Owner considers to be not legitimate in the Petition. Any arguments for
patentability not raised in the Patent Owner Response are deemed waived.
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We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
set forth below, we grant Petitioner’s motion to submit supplemental
information. Further, we find Petitioner has shown by a preponderance of
evidence that claims 11 and 12 of the ’049 patent are unpatentable.
A. RELATED PROCEEDINGS
The parties identify the following related matters:
Uniloc USA, Inc. et al v. Apple Inc., Case No. 1:18-cv-00164 (W.D.
Tex.); Uniloc USA, Inc. et al v. Samsung Electronics America, Inc. et al,
Case No. 2:18-cv-00040 (E.D. Tex.); Uniloc USA, Inc. et al v. Logitech Inc.
et al., Case No. 5:18-cv-01304 (N.D. Cal.); Uniloc USA, Inc. et al. v. LG
Electronics USA, Inc. et al, Case No. 3:18-cv-00559 (N.D. Tex.); Uniloc
USA, Inc. et al v. Huawei Device USA, Inc., Case No. 2:18-cv-00074 (E.D.
Tex.); Uniloc USA, Inc. et al v. ZTE (USA), Inc. et al, Case No. 2:18-cv-
00307 (E.D. Tex.); Uniloc USA, Inc. et al v. Blackberry Corp., Case No.
3:18-cv-01885 (N.D. Tex.); Uniloc 2017 LLC et al v. Microsoft Corp., Case
No. 8:18-cv-01279 (C.D. Cal.); Uniloc USA Inc. et al v. ZTE (USA), Inc. et
al, Case No. 3:18-cv-02839 (N.D. Tex.); Uniloc USA, Inc. et al v. LG
Electronics USA Inc. et al, Case No. 5:18-cv-06738 (N.D. Cal.); Uniloc
2017 LLC v. ZTE, Inc. et al., Case No. 3:18-cv-03063 (N.D. Tex.); Uniloc
2017 LLC v. Blackberry Corp., Case No. 3:18-cv-03068 (N.D. Tex.); Uniloc
2017 LLC v. Motorola Mobility, LLC, Case No. 1:18-cv-01840 (D. Del.);
Uniloc 2017 LLC v. HTC America, Inc., Case No. 2:18-cv-01727 (W.D.
Wash.). Pet. 56; Paper 3, 2.
B. THE ’049 PATENT
The ’049 patent is directed to a communication system comprising a
primary station and one or more secondary stations. Ex. 1001, code (57).
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The primary station broadcasts a series of inquiry messages, and adds to the
inquiry messages an additional data field for polling secondary stations. Id.
This system is useful for communications between the stations without
requiring a permanently active link, such as is common with the Bluetooth
communications protocol. Id.
C. ILLUSTRATIVE CLAIM
Petitioner challenges claims 11 and 12 of the ’049 Patent. Claim 11 is
the only independent challenged claim and is reproduced below:
11. A method of operating a communication system comprising
a primary station and at least one secondary station, the method
comprising the primary station broadcasting a series of inquiry
messages, each in the form of a plurality of predetermined data
fields arranged according to a first communications protocol,
and adding to an inquiry message prior to transmission an
additional data field for polling at least one secondary station,
and further comprising the at least one polled secondary station
determining when an additional data field has been added to the
plurality of data fields, determining whether it has been polled
from the additional data field and responding to a poll when it
has data for transmission to the primary station.
Ex. 1001, 8:35–47.
D. PRIOR ART AND ASSERTED GROUNDS
Petitioner asserts the following grounds of unpatentability. Pet. 1–2.
Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
11, 12 § 103 Larsson3

2 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103.
See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application
that issued as the ’049 patent was filed before the effective date of the
relevant amendments, the pre-AIA version of § 103 applies.
3 U.S. Patent No. 6,704,293 B1 (iss. March 9, 2004) (Ex. 1005, “Larsson”).
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Claim(s) Challenged 35 U.S.C. §2 Reference(s)/Basis
11, 12 § 103 Larsson, BT Core4
11, 12 § 103 IrOBEX5
II. PETITIONER’S MOTION TO SUBMIT ADDITIONAL
INFORMATION
In its motion to submit additional information, Petitioner seeks to
submit Exhibit 1020 as evidence to confirm the public accessibility of the
BT Core reference, which serves as part of Petitioner’s second ground of
unpatentability in this proceeding. Mot. 1. Patent Owner opposes the
motion. As the moving party, Petitioner bears the burden of proving that it
is entitled to the requested relief. 37 C.F.R. § 42.20(c) (2018). Under 37
C.F.R. § 42.123(a), a party may file a motion to submit supplemental
information if (1) a request for authorization to file such motion is made
within one month of the date the trial was instituted; and (2) the
supplemental information must be relevant to a claim for which trial has
been instituted. With respect to the first requirement of § 42.123(a), trial
was instituted in this proceeding on July 22, 2019. Paper 7. Because
Petitioner requested authorization to file a motion to submit supplemental
information on August 21, 2019, Mot. 1, Petitioner’s request was made
within one month of the date the trial was instituted. With respect to the
second requirement of § 42.123(a), the supplemental information Petitioner
seeks to submit relates to claims for which trial has been instituted because it
is directed to the public accessibility of the BT Core reference, which is one

4 Bluetooth™ Core Specification Vol. 1, ver. 1.0 B (pub. Dec. 1, 1999)
(Ex. 1014, “BT Core”).
5 Infrared Data Association, “IrDA Object Exchange Protocol IrOBEX,” ver.
1.2, 1–85 (1999) (Ex. 1006, “IrOBEX”).
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of the references at issue in the instituted grounds of unpatentability in this
proceeding.
Patent Owner argues we should deny Petitioner’s motion to present
supplemental information because Petitioner did not explain why the
supplemental information reasonably could not have been obtained earlier,
or why granting Petitioner’s motion would be in the interests of justice.
Opp. 1–3. We disagree. Although, as Patent Owner notes, we invited
Petitioner to address those issues, see id. at 1, Petitioner’s failure to do so
does not warrant denying Petitioner’s motion because Patent Owner has
failed to show that § 42.123(a) requires Petitioner to address those issues.
We grant Petitioner’s motion to submit supplemental information under 37
C.F.R. § 42.123(a) with respect to Exhibit 1020.
III. ANALYSIS
A. LEVEL OF SKILL IN THE ART
Petitioner asserts that a skilled artisan
would have had a Master’s of Science Degree (or a similar
technical Master’s Degree, or higher degree) in an academic area
emphasizing electrical engineering or computer engineering with
a concentration in wireless communication systems or,
alternatively, a Bachelors Degree (or higher degree) in an
academic area emphasizing electrical or computer engineering
and having two or more years of experience in wireless
communication systems.
Pet. 5–6. In addition, according to Petitioner, “[a]dditional education in a
relevant field, or industry experience may compensate for a deficit in one of
the other aspects of the requirements stated above.” Id. at 6. Patent Owner
does not contest or offer its own formulation for a skilled artisan. PO
Resp. 12. We agree with and adopt Petitioner’s proposal because it is
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consistent with the ’049 patent, as well as the problems and solutions in the
prior art of record. See Daiichi Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d
1254, 1256 (Fed. Cir. 2007).
B. CLAIM CONSTRUCTION
In inter partes review proceedings based on petitions filed before
November 13, 2018, such as this one, the Board interprets claim terms of an
unexpired patent using the “broadest reasonable construction in light of the
specification of the patent.” 37 C.F.R. § 42.100(b) (2018).6 We presume a
claim term carries its plain meaning, which is the meaning customarily used
by those of skill in the relevant art at the time of the invention. Trivascular,
Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). “[W]e need only
construe terms ‘that are in controversy, and only to the extent necessary to
resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc.
v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
1. “inquiry message”
Petitioner proposes a construction for “inquiry message” as
encompassing “a message seeking information or knowledge.” Pet. 7–11.
Patent Owner asserts that Petitioner’s construction is too broad, and
proposes instead that we construe an “inquiry message” as “a specific type of
message used, at least in part, to discover other devices in the vicinity which
may request to join a piconet.” PO Resp. 18; see id. at 13.

6 A recent amendment to this rule does not apply here because the Petition
was filed before November 13, 2018. See Changes to the Claim
Construction Standard for Interpreting Claims in Trial Proceedings Before
the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
(amending 37 C.F.R. § 42.100(b) effective November 13, 2018).
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We agree with Petitioner that under the broadest reasonable
construction, an “inquiry message” encompasses “a message seeking
information or knowledge.” Petitioner’s construction is consistent with the
term’s plain meaning. See Ex. 1013, 1376 (Oxford English Dictionary
defining “inquire” as “seek knowledge of (a thing) by asking a question” and
an “inquiry” as “the putting of a question, asking, interrogation”). Patent
Owner’s narrower construction improperly imports a limitation from a
preferred embodiment in the Specification—i.e., from the Specification’s
description of inquiry messages applied to Bluetooth technology. See PO
Resp. 18; see Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004) (“it is important not to import into a claim limitations that
are not a part of the claim. For example, a particular embodiment appearing
in the written description may not be read into a claim when the claim
language is broader than the embodiment.”). Nothing in the Specification
suggests that inquiry messages are limited to those applied to Bluetooth
technology. To the contrary, as Petitioner notes, the Specification
recognizes “the inquiry procedure is not restricted to Bluetooth devices and
is applicable to other communications arrangements.” Ex. 1001, 3:26–29;
see Pet. Reply 10. Because Petitioner’s construction is more consistent with
the term’s plain meaning and the Specification, we agree with Petitioner that
“inquiry message” encompasses “a message seeking information or
knowledge.”
2. “additional data field”
Patent Owner proposes we construe “additional data field” as “an
extra data field appended to the end of an inquiry message.” PO Resp. 13.
Petitioner argues Patent Owner’s construction is incorrect in so far as it
requires an additional data field appended at the end of an inquiry message.
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Pet. Reply 2–3. Petitioner asserts we do not need to further construe the
term. See id. at 5.
We agree with Petitioner. Nothing in the term’s plain meaning
suggests an additional data field must be added at a specific location, i.e., at
the end of an inquiry message. See Ex. 1021, 4 (defining “additional” as
“Added, supplementary”). Patent Owner’s proposed construction
improperly imports a limitation from an embodiment in the Specification.
See PO Resp. 13–14 (citing Ex. 1001, Fig. 5 and accompanying text).
Nothing in the Specification, however, suggests that the Figure 5
embodiment is definitional. Moreover, as Petitioner notes, dependent
claim 3 (not at issue in this proceeding), explicitly requires “adding the
additional data field at the end of a respective inquiry message.” Ex. 1001,
7:50–52 (emphasis added). Thus, the doctrine of claim differentiation
suggests challenged claims 11 and 12—which have no explicit location
language—do not require an additional data field must be at the end of the
inquiry message.
3. “broadcasting”
Patent Owner proposes a construction for “broadcasting” as “a
transmission that is receivable by multiple recipients.” PO Resp. 17.
Petitioner disagrees with Patent Owner’s construction, and argues we do not
need to explicitly construe the term. See Pet. Reply 6–9. The parties’
arguments related to “broadcasting,” impact only Petitioner’s third
unpatentability ground involving IrOBEX. See PO Resp. 25–27; Pet. Reply
20–23. Because we do not address that ground for the reasons discussed
below, see infra section III.D.3, we do not need to address the parties’
arguments related to “broadcasting.”
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C. ASSERTED PRIOR ART
1. Larsson (Ex. 1005)
Larsson discloses a:
method and/or an apparatus which places a broadcast message
which the source expects a reply message in a broadcast message
for route discovery. The combined message is broadcast
throughout the ad-hoc network. When the combined broadcast
message is received at the destination node, the destination node
generates a response message including a reply message to the
broadcast message including a reply message that the source
node expects a reply. The response message is sent back to the
source node over the route which the combined broadcast
message traveled to the destination node.
Ex. 1005, code (57).
2. BT Core (Ex. 1014)
BT Core defines the requirement for a transceiver operating the
Bluetooth wireless communication protocol. Ex. 1014, 18. Section 4.4
discusses different data packet types, id. at 55, and Section 4.5 provides
detail of payload within a packet, including a data field, id. at 62.
D. OBVIOUSNESS ANALYSIS
1. First Ground: Obviousness over Larsson
Petitioner asserts that claims 11 and 12 would have been obvious over
Larsson. Pet. 12. Based on Petitioner’s analysis and for the reasons
explained below, we find Petitioner has shown by a preponderance of
evidence that claims 11 and 12 would have been obvious over Larsson.
a. “inquiry message”
Claim 1 requires “the primary station broadcasting a series of inquiry
messages.” Petitioner asserts Larsson’s “broadcast message” is the claimed
“inquiry message.” Pet. 23–26. Patent Owner argues Larsson fails to teach
an inquiry message because Larsson’s broadcast message is for “route
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discovery,” rather than for “device discovery,” as the claim requires under
Patent Owner’s construction for inquiry message. PO Resp. 19.
We agree with Petitioner that Larsson discloses the disputed inquiry
message limitation under our construction of that term, i.e., “a message
seeking information or knowledge.” Patent Owner’s argument relies on its
“inquiry message” construction (i.e., a message used to discover other
devices), which we decline to adopt for the reasons explained above. As
even Patent Owner recognizes, Larsson’s broadcast message seeks
information because “its purpose is to discover an optimal route to a known
destination node which is already joined to a piconet.” PO Resp. 19
(emphasis omitted); see, e.g., Ex. 1005, 6:6 (describing a “request for route
broadcast message”). That is sufficient under our construction. Thus, we
find Larsson’s broadcast message teaches the disputed inquiry message
limitation.
b. “adding . . . an additional data field”
Claim 1 requires “adding to an inquiry message prior to transmission
an additional data field for polling at least one secondary station.” Petitioner
asserts Larsson teaches this limitation because Larsson teaches “the source
node piggybacks the broadcast message in a request for route broadcast
message.” Ex. 1005, 6:5–6; see Pet. 23. Petitioner explains, with support
from its expert, Dr. Knutson, that “the piggybacked broadcast message is the
additional data field added to the request for route message (inquiry
message) prior to transmission.” Id. (citing Ex. 1003 ¶ 72). Petitioner goes
on to explain that “the piggybacked data (i.e., broadcast message for which
the source node expects a reply) is a data field for polling.” Id. at 25 (citing
Ex. 1003 ¶ 78). Patent Owner argues that Larsson does not disclose “adding
. . . an additional data field” because Petitioner uses “data field” and “data”
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interchangeably. PO Resp. 21–22. According to Patent Owner, Petitioner
does not show sufficiently that Larsson discloses adding a data field, as
opposed to merely adding data to an existing data field. Id. at 20–23.
We agree with Petitioner that Larsson teaches the disputed “adding
. . . an additional data field” limitation. Larsson teaches that “[i]f the source
node does not expect a reply message . . . the source node will broadcast the
message to all neighbor nodes.” Ex. 1005, 5:65–7:1. Larsson also teaches
that “[i]f the source node does expect a reply to the broadcast message, . . .
the source node piggybacks the broadcast message in a request for route
broadcast message.” Id. at 6:3–6. In light of those disclosures, a person of
ordinary skill would have understood that Larsson’s piggybacked broadcast
message is an entirely separate message from the request for route broadcast
message. Dr. Knutson testifies that a person of ordinary skill in the art
would have viewed the piggybacked broadcast message as an additional data
field for polling. Ex. 1003 ¶¶ 72, 74, 75, 78, 79.
Patent Owner contends that merely adding piggybacked data to an
already existing data field of a message is clearly distinguishable from
adding an additional data field to that message. PO Resp. 21. Patent Owner
contends that Petitioner’s statement that “the piggybacked broadcast
message is added to the route request message as an additional data field for
polling” is conclusory, because the Petition only cites to a single paragraph
of Dr. Knutson’s declaration as support. Id. at 22 (citing Pet. 25). Patent
Owner also contends that Dr. Knutson’s testimony is conclusory, because
Dr. Knutson merely repeats the same statement from the Petition, without
explaining why he believes the underlying premise is correct. PO Resp. 22–
23.
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We disagree with Patent Owner that Petitioner’s contention is
conclusory and only cites to a single paragraph of Dr. Knutson’s testimony,
because the Petition cites to paragraphs 72–79 of Dr. Knutson’s testimony,
the disclosures of the Bluetooth specification, Haartsen, and Johansson, and
describes the similarities between the structure of Larsson’s piggybacked
data and the structure of the ’049 patent’s poll message. Pet. 23–25 (citing
Ex. 1003 ¶¶ 72–79; Ex. 1005, 6:22–24, 6:45–62, 7:53–61; Ex. 1010, 1:65–
67; Ex. 1011, 1:30–32, 1:43–50, 2:49–63; Ex. 1014, 55). We also disagree
with Patent Owner that Dr. Knutson’s testimony is conclusory. Dr. Knutson
testifies that Larsson’s piggybacked data has a similar structure to the
additional data field of the ’049 patent, because both Larsson and the HID
poll message of the ’049 patent include an address of the destination node.
Ex. 1003 ¶ 75. Dr. Knutson testifies that, given this similarity, “it would
have been obvious to POSITA that Larsson’s piggybacked data field is a
field for polling.” Id. We find Dr. Knutson’s interpretation of Larsson and
its described ‘piggybacked data’ persuasive. That the ’049 patent itself
describes the additional data field/poll message as having a similar structure
is, on balance, consistent with Dr. Knutson’s interpretation of Larsson. As
such, we find that it would have been obvious to a POSITA that Larsson’s
piggybacked data field is a field for polling.
Patent Owner does not address Petitioner’s contentions, supported by
underlying facts including Dr. Knudson’s testimony, to which we give
substantial weight. For example, Patent Owner does not address Dr.
Knudson’s testimony that a person of ordinary skill in the art would have
viewed the piggybacked message of Larsson as an additional data field
because of the similarity between the structure of the piggybacked data and
the structure of the ’049 patent’s poll message. Dr. Knutson explains, with
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supporting evidence, why a person of ordinary skill in the art would have
considered the piggybacked broadcast message of Larsson as an additional
data field for polling. Dr. Knudson’s testimony stands unrebutted.
Accordingly, we agree with Petitioner that a person of ordinary skill in the
art would have understood that the piggybacked broadcast message of
Larsson teaches “adding to an inquiry message prior to transmission an
additional data field for polling at least one secondary station,” as the
challenged claims require. See Pet. 23–26; Pet. Reply 14–17.
c. Undisputed Limitations in Claim 11
Claim 11 recites “[a] method of operating a communication system
comprising a primary station and at least one secondary station.” Petitioner
asserts that Larsson teaches this limitation because “Larsson discloses a
method of operating the communication system by performing route
discovery between a source node and a destination node, and transmitting
broadcast messages from the source node (primary station) to neighboring
nodes (at least one secondary station).” Pet. 16 (citing Ex. 1005, code (57),
Figs. 6A–7B, 5:35–67, 11:19–26). Patent Owner does not dispute
Petitioner’s assertions in this regard. We have reviewed Petitioner’s
arguments and the underlying evidence cited in support and are persuaded
Petitioner sufficiently establishes that Larsson teaches “[a] method of
operating a communication system comprising a primary station and at least
one secondary station.”
Claim 11 further recites “the method comprising the primary station
broadcasting a series of inquiry messages.” Petitioner asserts that Larsson
teaches this limitation because “Larsson’s source node (primary station)
broadcasts messages for route discovery to neighboring nodes (at least one
secondary station) in the communication system.” Pet. 16 (citing Ex. 1005,
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5:35–65). Other than its argument contesting Larsson’s route discovery
messages as the claimed inquiry messages, which we address supra at
Section III.D.1a, Patent Owner does not dispute Petitioner’s assertions in
this regard. We have reviewed Petitioner’s arguments and the underlying
evidence cited in support and are persuaded Petitioner sufficiently
establishes Larsson teaches “the method comprising the primary station
broadcasting a series of inquiry messages.”
Claim 11 requires that each broadcast message must be “in the form
of a plurality of predetermined data fields arranged according to a first
communications protocol.” Petitioner asserts that Larsson teaches this
limitation because “[i]n Larsson, every broadcast message contains ‘a
broadcast identifier in [a] network adaptation layer’ and ‘a source address
which uniquely identifies the source.’” Pet. 20 (quoting Ex. 1005, 5:50–60).
Moreover, Petitioner explains, “[t]hrough a POSITA’s [Person of Skill in the
Art] knowledge of Bluetooth, which is disclosed by Larsson, a POSITA
would have understood that the BD_ADDR includes a set of predetermined
data fields in a particular arrangement, as defined by Bluetooth.” Id. at 21
(citing Ex. 1003 ¶¶ 60–61; Ex. 1014, 143); see also id. at 21–22 (explaining
that “because Larsson uses Bluetooth as its underlying communication
technology, a POSITA would have understood that Larsson’s request for
route messages would include fields to comply with the standard Bluetooth
packet format, which includes an access code field, header field, and
payload field”). Patent Owner does not dispute Petitioner’s assertions in this
regard. We have reviewed Petitioner’s arguments and the underlying
evidence cited in support and are persuaded Petitioner sufficiently
establishes Larsson teaches “each in the form of a plurality of predetermined
data fields arranged according to a first communications protocol.”
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Claim 11 recites “further comprising the at least one polled secondary
station determining when an additional data field has been added to the
plurality of data fields.” Petitioner asserts that Larsson teaches this
limitation because in Larsson, “[t]he length indicator would indicate a longer
length when piggyback data is transmitted and a shorter length (e.g., normal
fixed length) when piggyback data is not transmitted.” Id. at 27 (citing
Ex. 1003 ¶ 86). Patent Owner does not dispute Petitioner’s assertions in this
regard. We have reviewed Petitioner’s arguments and the underlying
evidence cited in support and are persuaded Petitioner sufficiently
establishes Larsson teaches “the at least one polled secondary station
determining when an additional data field has been added to the plurality of
data fields.”
Claim 11 requires “determining whether [the at least one polled
secondary station] has been polled from the additional data field.” Petitioner
asserts Larsson teaches this limitation because it teaches determining “[i]f
the piggybacked data indicates that the [receiving neighbor] node is the
destination node,” Ex. 1005, 6:58–59, as well as “[i]f the piggybacked data
does not indicate that the [receiving neighbor] node is the destination node,”
id. at 6:46–48. See Pet. 29. Patent Owner does not dispute Petitioner’s
assertions in this regard. We have reviewed Petitioner’s arguments and the
underlying evidence cited in support and are persuaded Petitioner
sufficiently establishes Larsson teaches “determining whether [the at least
one polled secondary station] has been polled from the additional data field.”
Claim 11 requires “responding to a poll when [the at least one polled
secondary station] has data for transmission to the primary station.”
Petitioner asserts Larsson teaches this limitation because in Larsson, “the
receiving neighbor node only responds to the request for route message if
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the receiving neighbor node has stored data indicative a route back to the
source node and when the receiving neighbor node is the destination node of
the request for route message.” Id. at 30 (citing Ex. 1005, 6:11–65; Ex. 1003
¶¶ 90–91). Patent Owner does not dispute Petitioner’s assertions in this
regard. We have reviewed Petitioner’s arguments and the underlying
evidence cited in support and are persuaded Petitioner sufficiently
establishes Larsson teaches “responding to a poll when [the at least one
polled secondary station] has data for transmission to the primary station.”
For the reasons explained above, Petitioner has proved by a
preponderance of the evidence that claim 11 would have been obvious over
Larsson.
d. Claim 12
Claim 12 depends from claim 11 and additionally requires “wherein
not all inquiry messages have an additional data field for polling a secondary
station added to them.” Petitioner asserts Larsson’s “inclusion of the
piggyback indicator confirms that Larsson’s system sends request for route
messages with or without piggybacked data.” Id. at 31 (citing Ex. 1003
¶ 92). As Dr. Knutson explains, “addition of the piggyback indicator would
be unnecessary, [unless Larsson discloses] the transmission of request for
route messages with or without piggyback.” Ex. 1003 ¶ 93. Alternatively,
Petitioner explains, “Larsson’s disclosure of a length indicator . . . also
suggests that the request for route message may be sent with or without the
piggyback data” because “the length indicator would indicate a longer length
when piggyback data is transmitted and a shorter length (e.g., normal fixed
length) when piggyback data is not transmitted.” Pet. 32 (citing Ex. 1005,
7:57–61; Ex. 1003 ¶ 94). Patent Owner does not dispute Petitioner’s
assertions in this regard. We have reviewed Petitioner’s arguments and the
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underlying evidence cited in support and are persuaded Petitioner
sufficiently establishes Larsson teaches “wherein not all inquiry messages
have an additional data field for polling a secondary station added to them.”
2. Second Ground: Obviousness over Larsson and BT Core
a. Petitioner’s Proposed Combination
Petitioner asserts that claims 11 and 12 would have been obvious in
view of Larsson and BT Core. Pet. 32. Petitioner’s challenge mirrors its
earlier challenge based on Larsson alone, except that for this ground,
Petitioner relies on BT Core’s broadcast Poll transmission feature to more
clearly teach a data field for the following claim limitations: (1) “a plurality
of predetermined data fields arranged according to a first communications
protocol,” (2) “adding to an inquiry message prior to transmission an
additional data field for polling at least one secondary station,” and (3) “the
at least one polled secondary station determining when an additional data
field has been added to the plurality of data fields, determining whether it
has been polled from the additional data field and responding to a poll when
it has data for transmission to the primary station.” See id. at 32–33, 37–52.
As Petitioner explains, “Larsson discloses broadcasting messages using the
Bluetooth protocol, but does not explicitly disclose the structure of these
messages.” Id. at 35. Thus, Petitioner reasons, “a POSITA would have
combined the teachings of Larsson and BT Core to fully realize the
implementation of Bluetooth in Larsson’s route discovery method.” Id.
(citing Ex. 1003 ¶ 68). Petitioner explains that “[d]oing so would have
amounted to nothing more than the use of a known technique to improve
similar devices in the same way or the combination of prior art elements
according to known methods to yield predictable results.” Id. (citing KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)). As Dr. Knutson
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explains, “[a] POSITA would have found the combination to have been
nothing more than the use of a known technique (Bluetooth) to improve
similar devices (Larsson’s nodes) in the same way.” Ex. 1003 ¶ 68.
Moreover, “[a] POSITA also would have found the combination of Larsson
and BT Core to have been . . . the predictable implementation of Bluetooth
standard features in Larsson’s Bluetooth communication system.” Id. For
the reasons explained below, we determine Petitioner has proved by a
preponderance of evidence that claims 11 and 12 would have been obvious
over its proffered combination of Larsson and BT Core.
b. BT Core’s Status as Prior Art
Patent Owner argues that Petitioner failed to establish that BT Core is
prior art “because the Petitioner has not established the date[] on which the
reference[ ] w[as] published.” PO Sur-reply 3; see PO Resp. 1–8.
Specifically, Patent Owner argues the documentation included with the
Petition does not show that BT Core was publicly accessible before the
’049 patent’s June 26, 2006, critical date. PO Sur-reply 3; see PO Resp. 1–
8. We disagree. In his Declaration, Dr. Foley attests to his personal
knowledge of BT Core’s publication on or about December 1, 1999, which
is well before the ’049 patent’s critical date. Ex. 1020 ¶¶ 5–8. Patent Owner
does not offer any evidence or testimony to contest Dr. Foley’s statements.
Instead, Patent Owner maintains that we should not permit Petitioner to rely
on Exhibit 1020 because Petitioner failed to submit it with the Petition. See
PO Resp. 1–8; PO Sur-Reply 3–5. For the reasons explained above in
section II, we grant Petitioner’s motion to submit Dr. Foley’s Declaration
(Ex. 1020) as supplemental information. We agree with Petitioner that BT
Core was published before the ’049 patent’s June 26, 2006, critical date and
therefore qualifies as prior art.
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c. Patent Owner’s Arguments
Patent Owner raises several challenges to obviousness based on
Larsson and BT Core. First, Patent Owner argues that in relevant sections
cited by the Petitioner, a BT Core’s Poll packet is sent from a slave to
master, rather than from master to slave as the challenged claims require.
PO Resp. 24. We disagree with Patent Owner’s argument because BT Core
clearly describes sending a poll packet from master to slave. Specifically,
BT Core describes that “[u]pon reception of a POLL packet the slave must
respond” and “[t]his [POLL] packet can be used by the master in a piconet
to poll the slaves, which must then respond.” Ex. 1014, 55. The Petition
cited those passages explicitly. Pet. 34. Thus, we agree with Petitioner that
BT Core teaches sending a Poll packet from master from to slave (i.e. “the
primary station . . . polling at least one secondary station”) as claim 11
requires. See Pet. Reply 18–19.
Patent Owner next argues that “the cited passage of BT Core directed
to a ‘POLL packet’ defines the same as not having a payload.” PO Resp. 24.
Patent Owner’s argument is unpersuasive because it does not distinguish
over the challenged claims. Claim 11 requires, in relevant part, “adding to
an inquiry message . . . an additional data field for polling at least one
secondary station.” Although, as Patent Owner points out, a Poll message
does not include a payload, it does include other fields, which is all that the
challenged claims require. Specifically, as Petitioner explains, “Larsson
describes that the request for route messages include a BD_ADDR,” and
“BT Core describes the BD_ADDR address as including a plurality of
predetermined data fields arranged according to the Bluetooth protocol.”
Pet. 37 (citing Ex. 1014, 143). Petitioner also explains that its combination
teaches the required data-field limitation because BT Core’s standard
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Bluetooth packet includes predetermined data fields (i.e., an “access code”
field, “header” field, and “payload” field) arranged according to the
Bluetooth protocol. Ex. 1014, 47; see Pet. 38–39. Patent Owner does not
dispute Petitioner’s assertions in this regard or otherwise explain why a Poll
packet’s null payload is relevant to Petitioner’s obviousness analysis. See
PO Resp. 24–25.
Patent Owner next argues that “the Petition overlooks that the cited
passage of BT Core directed to a ‘POLL packet’ defines the same as polling
in general, without being directed to any slave in particular.” Id. at 25.
Patent Owner’s argument is unpersuasive because the claims recite only
“polling,” and therefore include both variations. Patent Owner’s distinction
between general versus specific polling is therefore not relevant.
d. Undisputed Rationale and Elements
We find Petitioner has articulated sufficient reasoning with some
rational underpinning to support the legal conclusion that its proffered
combination of Larsson and BT Core would have been obvious to one
skilled in the art. See KSR, 550 U.S. at 418. As Petitioner explains, a skilled
artisan would have combined Larsson’s route discovery method with BT
Core’s Bluetooth standards “to fully realize the implementation of Bluetooth
in Larsson’s route discovery method,” and “to ensure Larsson’s Bluetooth
communications are implemented correctly according to the Bluetooth
standard and to take full advantage of the functionality offered by Bluetooth
in Larsson’s route discovery method.” Pet. 35, 36. We also agree with
Petitioner that its proposed combination amounts to the use of a known
technique (Bluetooth) to improve similar devices (Larsson’s nodes), yielding
no more than the predictable results of implementing Bluetooth standard
features in Larsson’s Bluetooth communication system. See Pet. 35.
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In addition, we agree with Petitioner that its proffered combination of
Larsson and BT Core teaches “a plurality of predetermined data fields
arranged according to a first communications protocol,” as claim 11
requires. As Petitioner explains, “Larsson describes that the request for
route messages include a BD_ADDR,” and “BT Core describes the
BD_ADDR address as including a plurality of predetermined data fields
arranged according to the Bluetooth protocol.” Pet. 37 (citing Ex. 1014,
143). Petitioner also explains that its combination teaches predetermined
data fields arranged according to a communications protocol because “a
POSITA would have found it obvious that transmission in Larsson’s
Bluetooth network involves the Bluetooth standard fields and that Larsson’s
request for route messages would have been arranged according to the
predetermined packet format defined by BT Core.” Pet. 39. Further, BT
Core’s standard Bluetooth packet includes predetermined data fields (i.e., an
“access code” field, “header” field, and “payload” field) arranged according
to the Bluetooth protocol. Ex. 1014, 47; see Pet. 38–39. Patent Owner does
not dispute Petitioner’s assertions in this regard. We have reviewed
Petitioner’s arguments and the underlying evidence cited in support and are
persuaded Petitioner sufficiently establishes that the combination of Larsson
and BT Core teaches “a plurality of predetermined data fields arranged
according to a first communications protocol.”
We also agree with Petitioner that that its proffered combination of
Larsson and BT Core teaches “adding to an inquiry message prior to
transmission an additional data field for polling at least one secondary
station,” as well as “the at least one polled secondary station determining
when an additional data field has been added to the plurality of data fields,
determining whether it has been polled from the additional data field and
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responding to a poll when it has data for transmission to the primary
station,” as claim 11 requires. Petitioner’s mapping for these elements
mirrors its mapping related to Larsson alone, except that in its combination,
Petitioner relies on BT Core’s broadcast Poll transmission features (i.e.,
Bluetooth standard fields) to teach the data field limitations. See Pet. 41–42.
Other than the arguments addressed above, Patent Owner does not dispute
Petitioner’s assertions in this regard. We have reviewed Petitioner’s
arguments and the underlying evidence cited in support and are persuaded
Petitioner sufficiently establishes that the combination of Larsson and BT
Core teaches “adding to an inquiry message prior to transmission an
additional data field for polling at least one secondary station,” and “the at
least one polled secondary station determining when an additional data field
has been added to the plurality of data fields, determining whether it has
been polled from the additional data field and responding to a poll when it
has data for transmission to the primary station.”
For the reasons explained above, Petitioner has proved by a
preponderance of the evidence that claims 11 and 12 would have been
obvious over Larsson and BT Core.
3. Other Asserted Grounds
Petitioner asserts that claims 11 and 12 would have been obvious over
IrOBEX. Id. at 42–56. Because we find that Petitioner has demonstrated
claims 11 and 12 would have been obvious over Larsson alone as well as
over Larsson and BT Core, it is unnecessary for us to reach the remaining
grounds of unpatentability proposed by Petitioner. See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (holding that once a
dispositive issue is decided, there is no need to decide other potentially
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dispositive issues); Formlabs Inc. v. Envisiontec, Inc., IPR2017-01258,
Paper 41 at 17 (PTAB Oct. 5, 2018).
IV. CONCLUSION7
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, and Patent Owner Sur-Reply. We have considered all of the
evidence and arguments presented by Petitioner and Patent Owner, and have
weighed and assessed the entirety of the evidence as a whole.
We determine, on this record, that Petitioner has demonstrated by a
preponderance of evidence that claims 11 and 12 of the ’049 patent are
unpatentable over Larsson, as well as over Larsson and BT Core.

V. ORDER
It is hereby:

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).

Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
11, 12 103 Larsson 11, 12
11, 12 103 Larsson, BT Core 11, 12
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ORDERED that Petitioner’s motion to submit supplemental information
under 37 C.F.R. § 42.123(a) with respect to Exhibit 1020 (Paper 9) is
GRANTED; and
FURTHER ORDERED that claims 11 and 12 of the ’049 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Larsson; and
FURTHER ORDERED that claims 11 and 12 of the ’049 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Larsson and BT
Core; and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Walter Renner
Jeremy Maldonado
Roberto Devoto
FISH & RICHARDSON P.C.
Axf-ptab@fr.com
jjm@fr.com
devoto@fr.com

For PATENT OWNER:
Ryan Loveless
Brett Mangrum
James Etheridge
Jeffrey Huang
ETHERIDGE LAW GROUP
ryan@etheridgelaw.com
brett@etheridgelaw.com
jim@etheridgelaw.com
jeff@etheridgelaw.com